Butterfly Network, Inc.Download PDFPatent Trials and Appeals BoardOct 1, 20212021001528 (P.T.A.B. Oct. 1, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/626,925 06/19/2017 Daniel Nouri B1348.70035US05 2511 129830 7590 10/01/2021 BFLY Operations, Inc. c/o WOLF, GREENFIELD & SACKS, P.C. 600 Atlantic Avenue Boston, MA 02210-2206 EXAMINER BRUTUS, JOEL F ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 10/01/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): B1348_eOfficeAction@WolfGreenfield.com Patents_eOfficeAction@WolfGreenfield.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL NOURI, ALEX ROTHBERG, MATTHEW DE JONGE, JIMMY JIA, JONATHAN M. ROTHBERG, and MICHAL SOFKA Appeal 2021-001528 Application 15/626,925 Technology Center 3700 Before JILL D. HILL, CARL M. DEFRANCO, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Butterfly Network, Inc. Appeal Br. 3. Appeal 2021-001528 Application 15/626,925 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to techniques for guiding an operator to use an ultrasound device. Claims 1, 11, 24, and 30 are independent. Claim 11, reproduced below with certain limitations emphasized, is illustrative of the claimed subject matter: 11. A method, comprising: using at least one computing device comprising at least one processor to perform: obtaining an ultrasound image of a subject captured by an ultrasound device; identifying at least one anatomical feature of the subject in the ultrasound image using an automated image processing technique; identifying at least one medical parameter value of the subject using the at least one anatomical feature in the ultrasound image; and forming a composite image including the ultrasound image and the at least one medical parameter value. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Guterman US 2013/0278776 A1 Oct. 24, 2013 Stuebe US 2013/0345563 A1 Dec. 26, 2013 Seo US 2014/0207001 A1 July 24, 2014 Sharma US 2015/0112182 A1 Apr. 23, 2015 Cho US 2016/0066893 A1 Mar. 10, 2016 Appeal 2021-001528 Application 15/626,925 3 REJECTIONS I. Claims 1–10 are rejected under 35 U.S.C. § 103 as unpatentable over Stuebe and Sharma. II. Claims 11, 16, 17, 21, 22, 24, and 28–302 are rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Stuebe. III. Claims 12–15, 18, and 23 are rejected under 35 U.S.C. § 103 as unpatentable over Stuebe and Sharma. IV. Claims 19 and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Stuebe, Sharma, and Guterman. V. Claims 25 and 263 are rejected under 35 U.S.C. § 103 as unpatentable over Stuebe and Seo. VI. Claim 27 is rejected under 35 U.S.C. § 103 as unpatentable over Stuebe and Cho. OPINION Anticipation Based on Stuebe Appellant argues for the patentability of the claims subject to the anticipation rejection, i.e., claims 11, 16, 17, 21, 22, 24, and 28–30 (Rejection II), as a group. Appeal Br. 5–9. We select claim 11 as representative of the group, and claims 16, 17, 21, 22, 24, and 28–30 stand or fall with claim 11. 37 C.F.R. § 41.37(c)(1)(iv). 2 We understand the Examiner’s omission of claims 24 and 28–30 from the heading of Rejection II to be a typographical error in that the Examiner discusses these claims in the body of the rejection. 3 We understand claims 25 and 26 to be rejected in Rejection V, because the body of the rejection discusses “transducers,” which are recited in claims 25 and 26, not claim 24. See Final Act. 13–14; see also Appeal Br. 17 (Claims App.). Appeal 2021-001528 Application 15/626,925 4 Each of independent claims 11, 24, and 30, recites, inter alia, “at least one medical parameter value.” Appeal Br. 14, 17–18 (Claims App.). Appellant argues that the term “medical parameter value” differs from the term “medical parameter” based on the plain meaning of these terms, based on claims 7 and 17 using both of these terms, and based on the Specification providing several examples that distinguish between these two terms. Appeal Br. 6–7. According to Appellant, the Examiner’s anticipation rejection is deficient at least because the term “value” is absent from the Examiner’s analysis. Id. at 8. Appellant asserts that although the Examiner relies on the disclosed LVH and ECG of Stuebe, as being a medical parameter, neither LVH nor ECG is a medical parameter value.4 Id. at 9. In response, the Examiner agrees that the terms “medical parameter” and “medical parameter value” have different meanings, but finds that Stuebe discloses both limitations. Ans. 3–4. In particular, the Examiner asserts that Stuebe’s report generator 126 analyzes a medical parameter, namely, “at least one of the LV mass, the septal wall thickness, or the posterior wall thicknesses” to determine whether their measurements (values) exceed a designated value. Id. at 4 (citing Stuebe ¶ 74). Thus, according to the Examiner, Stuebe discloses a “‘medical parameter value’” 4 Although our reviewing court has held that non-functional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art, because neither the Examiner nor Appellant raise the issue of whether the claimed “value” is non-functional descriptive material, nor do we. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Appeal 2021-001528 Application 15/626,925 5 exceeding a designated value” and discloses a “‘medical parameter’ such as LV, the septal wall thickness, or the posterior wall thicknesses.” Id. Appellant replies that the Examiner’s reliance on paragraph 74 of Stuebe is in error, because “treating the ECG recording of Stuebe as a ‘medical parameter value’ within the meaning of claim 11, as the Office does in the Examiner’s Answer, leads to the conclusion that claim 11 is not anticipated at least because the other limitations of claim 11 are then not met by Stuebe.” Reply Br. 7. Appellant’s arguments do not apprise us of Examiner error because Appellant does not address fully the Examiner’s findings of fact. Specifically, although the Examiner finds that ECG recordings are values, the Examiner also finds that a particular mass or wall thickness has a value that is compared to the designated value. See Ans. 4 (“‘medical parameter value’ exceeding a designated value.”). Even if Stuebe’s ECG recordings are not medical parameter values as Appellant argues (see Reply Br. 4–7), Appellant does not explain adequately why Stuebe’s “LV mass, the septal wall thickness, or the posterior wall thickness” are not medical parameters as the Examiner finds, and why determining whether values of each of these medical parameters “exceed[s] a designated value” does not qualify as identifying a medical parameter value, as the Examiner further finds. Stuebe ¶ 74; see also Ans. 4. Appellant’s Specification discloses that “a medical parameter [is] selected from the group consisting of: an ejection fraction, a fractional shortening, a ventricle diameter, a ventricle volume, an end-diastolic volume, an end-systolic volume, a cardiac output, stroke volume, an intraventricular septum thickness, a ventricle wall thickness, and a pulse Appeal 2021-001528 Application 15/626,925 6 rate.” Spec. ¶ 73 (emphasis added). Based on this disclosure, Stuebe’s septal wall thickness or posterior wall thickness is consistent with Appellant’s disclosed medical parameter. Claim 11 requires “identifying at least one medical parameter value of the subject using the at least one anatomical feature in the ultrasound image.” Appeal Br. 14 (Claims App.). For this limitation, Appellant’s Specification discloses that computing device 404 “may identify the left ventricle as an anatomical feature 402 and analyze the characteristics of the left ventricle (such as the left ventricle diameter shown as anatomical feature characteristic 404) to identify the medical parameters 410.” Spec. ¶ 198. In the embodiment of Figure 4, the left ventricle diameter (LVD) has a value of 38.3 mm, the left ventricle end- systolic diameter (LVESD) has a value 38.2 mm, and the left ventricle end- diastolic diameter (LVEDD) has a value 49.5 mm. Id.; Fig. 4. The Specification also discloses that “the computing device may change a color of the medical parameters 410 shown in the display 406 based on the value of the medical parameters,” to indicate that the values are within a normal range, a borderline abnormal range, or an abnormal range. Id. ¶ 200. Similarly, Stuebe discloses “obtain[ing] one or more measurements (e.g., dimensions of anatomical structures, ECG recordings) from a patient,” and “analyz[ing] various data, including the measurements,” which “include at least one of an LV mass, septal wall thickness, or posterior wall thickness.” Stuebe ¶¶ 64, 74; see also Final Act. 6. Stuebe also discloses that analysis of the LV mass, the septal wall thickness, or the posterior wall thickness includes determining whether “the LV mass, the septal wall thickness, or the posterior wall thicknesses exceed a designated value.” Id. ¶ 74. We agree with the Examiner that the medical parameter, namely, LV Appeal 2021-001528 Application 15/626,925 7 mass, septal wall thickness, or posterior wall thickness has a determined or identified value, in order to determine whether that value exceeds “a designated value.” See Ans. 4; see also Stuebe ¶ 74. Thus, contrary to Appellant’s assertion, Stuebe discloses both a medical parameter and a medical parameter value. Stuebe’s medical parameter values, moreover, are measurements of “ultrasound images, [or] measurements of the heart in at least one of the ultrasound images,” as required by claim 11. Stuebe ¶ 44; see also Final Act. 6. Stuebe further discloses the diagnostic system “is configured to automatically identify a measurement frame from the set of image frames,” as also required by claim 11. Id. ¶¶ 5–6; see also Final Act. 6. For these reasons, although the Examiner omits the term “value” from the rejection, because the Examiner equates the term “measurement” with “value,” we are not apprised of Examiner error in the Examiner’s application of Stuebe. We have considered all of Appellant’s arguments in support of the patentability of claim 11, but find them unavailing. Accordingly, we sustain the rejection of claim 11. Claims 16, 17, 21, 22, 24, and 28–30 fall with claim 11. Rejections I and III–VI; Obviousness based on Stuebe, Sharma, Guterman, Seo, and Cho In the Appeal Brief, Appellant does not make arguments contesting the obviousness rejections, Rejections I and III–VI, aside from those discussed above regarding claim 11. See Appeal Br. 9–12. Appeal 2021-001528 Application 15/626,925 8 In the Reply Brief, Appellant makes various new arguments, some of which Appellant attempts to characterize as being in response to the Examiner’s Answer. For example, Appellant repeatedly states that the assertion in the Examiner’s Answer that “that an ECG recording is a ‘medical parameter value’ renders the rejections of [the] claims … facially improper.” Reply Br. 13–15. All of Appellant’s new arguments could have been made in the Appeal Brief, allowing the Board to have the opportunity to consider a response from the Examiner. In particular, the Examiner found that both “dimensions of anatomical structures” and “ECG recordings” are measurements (see Final Act. 6) that are medical parameter values (see Advisory Action, mailed April 10, 2020).5 Thus, contrary to Appellant's various characterizations, the arguments noted above are not responsive to any new findings or reasoning expressed for the first time in the Examiner’s Answer. Appellant does not show good cause for delaying the presentation of the new arguments made in the Reply Brief. Accordingly, we will not consider Appellant’s belated arguments. See Ex parte Borden, 2010 WL 191083 at *2 (BPAI 2010) (informative) (“The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”); see also 37 C.F.R. 5 “An appellant’s brief must present arguments responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken (as modified by any advisory action and/or pre-appeal brief conference decision).” MPEP § 1205.02 (10th Ed., Rev. 10.2019, June 2020); see also 37 C.F.R. § 41.31(c) and 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-001528 Application 15/626,925 9 § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). We have considered all of Appellant’s timely arguments in support of the patentability of claims 1–10 (Rejection I) and claims 12–15, 18–20, 23, and 25–27 (Rejections III–VI), but find them unavailing. Accordingly, we sustain Rejections I and III–VI. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10 103 Stuebe, Sharma 1–10 11, 16, 17, 21, 22, 24, 28–30 102(a)(1) Stuebe 11, 16, 17, 21, 22, 24, 28–30 12–15, 18, 23 103 Stuebe, Sharma 12–15, 18, 23 19, 20 103 Stuebe, Sharma, Guterman 19, 20 25, 26 103 Stuebe, Seo 25, 26 27 103 Stuebe, Cho 27 Overall Outcome 1–30 Appeal 2021-001528 Application 15/626,925 10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation